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Lush succeeds in infringement claim against Amazon

The High Court has ruled in the case of Cosmetic Warriors v Amazon.co.uk Limited [2014] EWHC 181 (Ch)in which popular cosmetics retailer Lush claimed UK retail giant Amazon had infringed its trade mark in a number of ways. Lush's case hinged on three separate claims:

That Amazon had bid on the keyword 'lush', as a sponsored advertisement using Google AdWords, thereby directing any Google searches for 'lush' to Amazon, who do not sell any Lush products;

That Amazon searches for 'bath bomb' suggested the product, which Lush claimed as its own, could be purchased using the Amazon website; and

That typing the incomplete string 'lu' into the Amazon search box suggested that the user was searching for 'lush cosmetics' or similar products by Lush and then produced third party products similar to Lush's products.

Deputy High Court Judge John Baldwin QC concluded that the first claim did indeed establish infringement, in that "the consumer is likely to think that Amazon is a reliable supplier of a very wide range of goods and he would not expect Amazon to be advertising Lush soap for purchase if it were not in fact available for purchase." The judge's reasoning echoed the judgment in Marks & Spencer v Interflora [2012] EWCA civ 1501.

The judge rejected the Lush's arguments in the second claim, as he did not consider average consumers would be misled by the types of search results revealed by searches for "bath bombs".

However, the judge ruled in favour of Lush on the third claim, which related to Amazon's own search facility on its website. Amazon sought to argue that consumers, once presented with the search results, would quickly appreciate that the products being shown to them were third party products competing with Lush products. Lush countered this point by arguing it was unrealistic and unfair to conclude without difficulty that they were being offered competing products. The judge, having considered the judgments in Google France (Case C-236/08) [2010] RPC 19 and L'Oreal v eBay International [2009] RPC 21 agreed with Lush's arguments, stating that "The use complained of by Lush clearly damages the origin function and the advertisement and investment function of the Lush trade mark".

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